United States Court of Appeals
Fifth Circuit
F I L E D
IN THE UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT October 1, 2004
______________________ Charles R. Fulbruge III
Clerk
No. 03-30102
______________________
SHAHRAM NAGHI,
Plaintiff - Appellee,
v.
EUROPE’S FINEST, INC., ET AL.,
Defendants,
CHARLES SHAW d/b/a MARDI GRAS TRADING,
Defendant – Appellant.
______________________
Appeal from the United States District Court
for the Eastern District of Louisiana,
USDC No. 00-CV-2231
______________________
Before SMITH, PRADO, and PICKERING, Circuit Judges.
PER CURIAM:*
On June 25, 2002, a jury found Charles Shaw liable for
infringing Shahram Naghi’s copyright on a design for a hemp leaf,
Mardi Gras necklace. The district court entered judgment against
Shaw and ordered him to pay Naghi $117,352 in fees and costs.
*
Pursuant to 5TH CIRCUIT RULE 47.5, the court has determined that this opinion should
not be published and is not precedent except under the limited circumstances set forth in 5TH
CIRCUIT RULE 47.5.4.
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Shaw appeals that judgment.
On appeal, Shaw seeks a new trial on the grounds that (1)
the evidence was insufficient to support the jury verdict, (2) he
should be allowed an opportunity to assert an estoppel defense,
and (3) the district court’s rulings were so prejudicial that he
did not receive a fair trial. Shaw also asks this court to hold
that the district court abused its discretion in awarding
attorney’s fees. We AFFIRM the judgment of the district court.
Sufficiency of the Evidence
Shaw first argues that the evidence was insufficient to
support the finding that Naghi possessed a valid copyright.
Because Shaw failed to properly renew his motion for judgment as
a matter of law at the close of all evidence as required by FED.
R. CIV. P. 50,1 we review the sufficiency of the evidence for
plain error only. See Adames v. Perez, 331 F.3d 508, 511 (5th
Cir. 2003). Under the plain error standard, we may set aside the
jury verdict and grant Shaw a new trial only if “the judgment
works a manifest miscarriage of justice,” examining “whether
there is any evidence to support the jury’s verdict.” Id. at
511-12.
Shaw contends that Naghi’s necklace design, which contained
beads in the shape of hemp leaves, was not copyrightable under
1
Notwithstanding Shaw’s argument on appeal that his self-styled “Motion for Entry Into
the Record” constituted a post-verdict motion for judgment as a matter of law, we conclude that
he did not comply with the requirements and purposes of FED. R. CIV. P. 50.
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the “merger doctrine.” The merger doctrine provides that if an
idea is capable of only one manner of expression, the idea and
the expression “merge” and are exempted from copyright
protection. See Veeck v. Southern Bldg. Code Congress Int’l,
Inc., 293 F.3d 791, 801 (5th Cir. 2002). Shaw argues that a hemp
leaf, as a thing in nature, is capable of only one manner of
expression, and, therefore, Naghi’s necklace design was
uncopyrightable.
An examination of the record reveals ample evidence to
support the jury’s finding that Naghi held a valid copyright over
the necklace design. The evidence indicated that hemp leaf beads
were capable of more than one mode of expression, and that
Naghi’s particular expression of them, within the context of the
necklace as a whole, was unique. Further, because Shaw failed to
argue at trial that the evidence was insufficient under the
merger doctrine, the judgment was not manifestly unjust.
Accordingly, we will not disturb the jury’s verdict by granting a
new trial.
Estoppel
Shaw also requests a new trial so that he may assert an
estoppel defense against Naghi. Estoppel is an affirmative
defense that is waived if not raised at trial and will not be
considered for the first time on appeal. See FED. R. CIV. P.
8(c); Henry v. First Nat’l Bank of Clarksdale, 595 F.2d 291, 298
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(5th Cir. 1979).
Shaw concedes that he did not raise an estoppel defense at
trial. In addition, the record indicates that estoppel was not
tried by implied consent, as permitted under FED. R. CIV. P.
15(b). Finally, we disagree with Shaw that refusal to allow him
another opportunity to bring an estoppel defense will result in
manifest injustice. Because Shaw could have raised the defense
of estoppel at trial but he failed to do so, that defense was
waived.
Fair Trial
Shaw next contends that he should be granted a new trial
because the district court abused its discretion in making
several discovery and evidentiary rulings, and that these errors
caused Shaw to receive an unfair trial. In Latiolas v. Whitley,
we held that a new trial may be necessary when, in the context of
all the circumstances surrounding a trial, a party was
substantially prejudiced by an accumulation of trial errors such
that the trial was fundamentally unfair. 93 F.3d 205, 207, 210
(5th Cir. 1996). Because the record here suggests no such
accumulation of errors, or that the trial was unfair or that Shaw
was substantially prejudiced, a new trial is not warranted.
Attorney’s Fees Award
Lastly, Shaw contends that the attorney’s fees award was
erroneous or excessive. We review the district court’s
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attorney’s fees award for abuse of discretion. Strong v.
BellSouth Telecomms., Inc., 137 F.3d 844, 850 (5th Cir. 1998).
We conclude that the district court did not abuse its
discretion in making the attorney’s fees award. First, the court
appropriately applied the factors set forth in Fogerty v.
Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994), and certain of
those set forth in Johnson v. Georgia Highway Express, Inc., 488
F.2d 714, 717-19 (5th Cir. 1974).2 Further, the record supports
the court’s determination that attorney’s fees were warranted
under those factors. Although Shaw argued that attorney’s fees
should not be awarded because the litigation was so financially
burdensome for him, he submitted no evidence in support of this
argument. In addition, the court noted that Shaw had been found
liable for copyright infringement in another case. Finally,
although Shaw argues that award was excessive in light of the
jury’s finding that he was not a “willful infringer,” attorney’s
fees awards are not statutorily conditioned upon a defendant’s
willfulness, bad faith, or unreasonableness. Hence, the district
court was within its discretion in awarding attorney’s fees to
2
The factors articulated in Fogerty, all of which were addressed by the district court, are:
(1) frivolousness; (2) motivation; (3) objective reasonableness (in the factual and legal
components of the case); and (4) the need for compensation and deterrence. Fogerty, 510 U.S. at
534 n.19. The four “Johnson factors” considered by the district court in this case are: (1) the time
and labor required to work on the case; (2) the attorney’s customary fee; (3) the amount of
damages involved and the results obtained; and (4) the experience, reputation, and ability of the
attorneys. Johnson, 488 F.2d at 717-19.
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Naghi.
For the foregoing reasons, we AFFIRM the judgment of the
district court.
AFFIRMED.
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